By Stephen M. Ankrom
This term, the Supreme Court will decide Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC, No. 17-571, a case that will address a long-standing split in the Circuit courts as to whether a copyright plaintiff must have a copyright registration before filing suit or whether a pending application is sufficient to satisfy the registration requirements of the Copyright Act. Given the Copyright Act’s statute of limitations which only permits copyright owners to pursue claims for infringement that accrued[1] in the three year period immediately prior to the filing date, this decision could have significant impact on copyright owners that do not promptly register their copyrights.
The Circuit Split
The Copyright Act provides that:
[N]o civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.
17 U.S.C. § 411(a) (“Section 411”).
The Ninth and the Fifth Circuit Courts of Appeal have held that “registration of [a] copyright claim has been made” when the copyright holder delivers the required application, deposit copy, and fee to the Copyright Office (the “application” approach). Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612, 619 (9th Cir. 2010); Positive Black Talk Inc. v. Cash Money Records, Inc., 394 F.3d 357, 365 (5th Cir. 2004). The Eighth Circuit, in non-binding dicta, has endorsed the application approach as well. Action Tapes, Inc. v. Mattson, 462 F.3d 1010, 1013 (8th Cir. 2006). In contrast, the Tenth and Eleventh Circuits have held that the registration requirement is only met once the Copyright Office acts on that application by either rejecting the application or issuing a registration (the “registration” approach). M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488 (11th Cir. 1990).
The Seventh Circuit contains conflicting dicta on whether it follows the application or registration approach. Compare Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003) (“[A]n application for registration must be filed before the copyright can be sued upon.”) with Gaiman v. McFarlane, 360 F.3d 644, 655 (7th Cir. 2004) (“[A]n application to register must be filed, and either granted or refused, before suit can be brought.”). The First and Second Circuits have acknowledged the split in authority but has declined to adopt either the application or registration approach. Alicea v. Machete Music, 744 F.3d 773, 779 (1st Cir. 2014); Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120, 125 (2d Cir. 2014).
The Case Before the Supreme Court
Fourth Estate Public Benefit Corporation is a news organization producing online journalism. It licenses articles to websites but retains the copyright in those articles. Wall-Street.com obtained such a license. The license agreement required that Wall-Street.com remove all content produced by Fourth Estate upon termination of the license. Wall-Street.com subsequently cancelled the license but continued to display articles produced by Fourth Estate. Fourth Estate then filed a copyright application for the articles in question with the Copyright Office and filed suit in the Southern District of Florida against Wall-Street.com while the application was pending. The district court dismissed the suit for lack of an issued registration, Fourth Estate Pub. Benefit Corp. v. Wall-Street.com LLC, No. 16-civ-60497, 2016 WL 9045625, at *1 (S.D. Fla. May 23, 2016), and the Eleventh Circuit affirmed the district court’s decision on appeal. Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 856 F.3d 1338, 1341 (11th Cir. 2017).
Conflicting Rationales
Advocates of the registration approach primarily rely on the statutory language of the Copyright Act to support their position, citing Section 411’s provision that “registration of the copyright claim [be] made” before filing suit and arguing that the Copyright Act “defines registration as a process that requires action by both the copyright owner and the Copyright Office.” See, e.g., id. Thus, the registration requirement of Section 411 is not satisfied until the Copyright Office acts on the application by issuing a registration or denying the application.
By contrast, courts following the application approach argue that the broader purposes underlying the Copyright Act validate the application approach. They claim that requiring a plaintiff to delay filing suit until the Copyright Office issues a registration can result in a copyright owner not being able to sue for infringement altogether, which is contrary to the general protections afforded copyright owners by the Copyright Act. This is because the Copyright Act’s statute of limitations provides that a copyright owner cannot recover for any infringement that accrued more than three years prior to the filing of the suit. 17 U.S.C. 507(b). Given the substantial, and increasing, lag between the chronically-underfunded Copyright Office’s receipt of an application and its issuance of a registration certificate, a plaintiff could see the statute of limitations expire during the time it took the Copyright Office to act on the application. Proponents of the application approach further argue that there is no compelling justification to delay a lawsuit until the Copyright Office has issued a registration: Despite the lag between the submission of an application and the issuance of a registration, most registrations will have been issued or rejected during the pendency of litigation, and the Register of Copyright’s decision as to whether or not to grant a registration is ultimately reviewable by the courts in any event. 17 U.S.C. 411(a); 410(c).
Regardless of how the Supreme Court decision comes down, copyright owners may need to adopt new copyright filing procedures to ensure they are able to enforce their copyrights in federal courts.
[1] Depending on the jurisdiction, a copyright infringement claim accrues either on the date the infringement occurs or when the copyright owner reasonably should have become aware of the infringement.